Declaratory Judgment Claimants: Which Products Are You Saying Don’t Infringe?

Declaratory judgment plaintiffs and counterclaimants in patent cases have long been accustomed to filing boilerplate claims that either do not identify an accused technology, or that do so in a cursory manner. Noninfringement pleadings typically read something like this: "We are entitled to declaratory judgment that we have not infringed any valid claim of the '123 patent." In many cases, this form of pleading goes unchallenged because there is no confusion about the identity of the product or process that has been accused of infringement. Recently, however, district courts have become increasingly inclined to dismiss noninfringement claims that do not sufficiently identify the technology that supposedly does not infringe. As discussed below, even Form 18-style pleadings may prove inadequate if the description of the accused product or process is too vague to create an "actual controversy" within the meaning of the Declaratory Judgment Act.

Iqbal-Twombly, Form 18, and the Declaratory Judgment Act

As has become well-known, the Supreme Court's rulings in Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 556 U.S. 662 (2009) hold that Rule 8(a) requires a case-initiating pleading to state sufficient facts to make the claim plausible. Thus, "labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Twombly, 550 U.S. at 555. A separate source of authority is Form 18 of the Federal Rules of Civil Procedure, which explicitly endorses the following example of a patent infringement pleading: "The defendant has infringed and is still infringing the Letters Patent by making, selling, and using electric motors that embody the patented invention." The Federal Circuit has recently made clear that "to the extent any conflict exists between Twombly (and its progeny) and the Forms regarding pleadings requirements, the Forms control." K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277, 1283 (Fed. Cir. 2013). Although Form 18 provides an example of an affirmative infringement claim, district courts have held that it applies to declaratory judgment claims as well. See, e.g., Microsoft Corp. v. Phoenix Solutions, Inc., 741 F. Supp. 2d 1156, 1163 (C.D. Cal. 2010).

In the context of a declaratory judgment action, however, the Declaratory Judgment Act itself must also be considered. 28 U.S.C § 2201 provides that the existence of an "actual controversy" is an absolute predicate for...